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Thursday, 11 September 2008

IPKat team member Jeremy attended yesterday's meeting of the SOLO IP group, at which a team from LexisNexis explained what legal and IP-related materials and search services it could provide and a group of sole and small practitioners explained what it was that they actually wanted. The meeting was a stimulating one, at which a variety of views were exchanged and a good deal of hard listening was done.

A sudden thought occurred to the Kats' representative at that meeting. It runs like this:

Many years ago in Magill, the European Court of Justice took the view that the failure of television companies to make their listings of forthcoming programmes available for publication in magazines -- thus forcing viewers to purchase separate magazines in respect of different TV channels which they wanted to watch -- should be viewed a an abuse of the copyright monopoly since it prevented the development of a products in a market that was not the TV companies' market but one that was tangential to it.

For all lawyers, and not just IP professionals, a similar situation exists. Each of LexisNexis and Westlaw owns and provides access to a large portfolio of databases including law reports, official materials and relevant professional and scholarly writing. In order for any practitioner to serve his clientele most effectively, he really needs to be able to have access to both. Would it not be at least arguable that a comparison can be made with the case of TV programme lists?

To resolve the problem, let LexisNexis, Westlaw and any other possessors of equivalent legal databases be encourage to make licences available to their competitors on FRAND ('fair, reasonable and non-discriminatory') terms, so that royalties will be secured in respect of their proprietary materials, leaving LexisNexis, Westlaw and the like to compete with one another in terms of their pricing to users and the quality of the facilities for interrogating the data?

7 comments:

Well, Milud. This kat wouldn't want to tangle to with topkat Dr P, but I don't think that's the way to go and I think 'Magill' addresssed a situation where the IP owner prevented the creation of a 'downstream' market which doesn't apply here.Let's turn this on its head. I think Dr P made the valid point that solo practitioners/sole principals could create a powerful buying consortia. So let's aggregate some buying power. Not only might we get better deals, but we could also create a market for services tailored to our particular needs.The (eponymous) Laurence Kaye

I'm not entirely sure that the parallel holds up - as the key point in Magill (as developed by IMS)is that there was a clear need for a new product which didn't exist at the time and which the rights holders were not interested in providing (a combined TV guide covering all channels). Whilst the recent Microsoft decision has opened up the 'new product' requirement somewhat (because Microsoft were arguably already providing versions of the server technology which the complainant Sun wanted to market), compelling a rights holder to allow competition right in its own backyard would still be pretty controversial.

In the US, the broadcast schedule consisting of the titles and times of the television program (or playing schedule of sports events, for instance, is not copyrightable. While the contents of legal databases are copyrighted compilations.

Westlaw and Lexis don't seem to pay anything to all of the copyright owner of the works in their databases in Europe - they may pay the publishers but not the authors. The ALCS collecting society collects and distributes photocopying royalties to authors but not digitial distribution royalties.

In the US, there is an ongoing class action about this - see http://www.copyrightclassaction.com/. I'm sure I got a written notice about it once upon a time. However, the proposed settlement appears to discriminate massively against non-US copyright owners - $1500 per article if you registered it with the US Copyright Office, $5 if you did not (TRIPS?!) - see p4 of http://www.copyrightclassaction.com/notice.pdf. Interestingly, that seems to have been the cause of the delay to approval of the proposed settlement.

Most authors want their materials to appear on the databases for reasons of exposure. However, it seems odd that they don't get any share of the fees made by Westlaw etc when they do get a share of photocopying royalties...

I liked (but doubt the viability of) your suggested Magill approach to legal publishing! Presumably LN and Westlaw would argue that the essential facilities equivalent to the TV listings raw data would be the primary law which is (largely) freely available via BAILLI, HMSO, Curia, OHIM, EPO etc, etc, whereas their subscription-only added value (commentaries, precedents, linking, aggregation) is how they legitimately compete for business. There is nothing (in Magill terms) to prevent competitors building up competing databases. Obviously you could argue that some secondary sources like JIPLP or ETMR headnotes are also essential facilities, but I'm not sure the ECJ would buy that...

Echoing the comment at 10:03, I'd reinforce that the answer may lie more in terms of pushing forward open access, especially in terms of an open acccess law programme in the UK. See Science Commons at SC OAL and obligatory wikipedia reference. SCRIPT had an event at BILETA this year (which I nudged SCRIPT for but did none of the planning -- with huge thanks to Shawn and Wiebke) on OAL and of course there have been huge moves in the open access space throughout the UK (SHERPA and lots and lots of blogs and various projects, including in open data).

One move that would greatly push forward access would be if authors and journal editors such as yourself would insist on using open content licences or publishing only in open access journals. That way the rights issues would be (at least partially) solved at the source. Rather than some grand litigation at the ECJ, I humbly suggest that the Kat could start with bringing the issue up at JIPLP.

The more open the sources of information (the data -- journal articles, case law, statutes) then all the more fiercely will LexisNexis, Westlaw, Kluwer and others "compete with one another in terms of their pricing to users and the quality of the facilities for interrogating the data".

My comment is not on fair use but more of a practical suggestion for cost management for the use of Lexis/Nexis: instead of taking out a subscription to these databases, why not instruct a firm of information scientists? The advantages being a) they will already have a licence to use the database, so saving you the cost of subscribing yourself b) they are much more experienced in how to use the databases c) they will be able to advise on what other databases might be more appropriate in the circumstances of any given matter and d) if the results are to be the basis for evidence before the Trade Marks Registry, then a witness statement from an information scientist carries far more weight than a statement from a trade mark attorney.

If people want to call me for the name of the firm I use I will be happy to give it to them. The last time I filed a witness statement from them based on their research the Principal Hearing Officer at the Registry stated in his decision that the evidence was so thorough and accurate that he would reflect it in giving our side an order for costs on the maximum scale set by the Registry.

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